26 Pages Posted: 2 Jul 2008
Date Written: June, 30 2008
Patentable subject matter historically constituted a significant bar to patentability. However, technological growth coupled with the expansion of patent law under the Federal Circuit has left patentable subject matter largely irrelevant for practical purposes. Although presenting easily surmountable drafting difficulties, subject matter has rarely presented a difficult hurdle to obtaining a patent in recent years. This changed with the Supreme Court's grant of certiorari in Lab. Corp. v. Metabolite. Although certiorari was ultimately dismissed as improvidently granted, the Supreme Court's renewed interest in patent law coupled with Justice Breyer's dissent from dismissal suggests that the Court is ready to take a new look at subject matter doctrine. This Article analyzes the history of the subject matter doctrine and examines in detail the subject matter issues presented by modern technological developments. Ultimately the Article highlights a proposed test for patentabity in the biotechnology space and suggests a new formulation of the patentable subject matter doctrine to deal with patents on abstract technologies. New technology makes patentable subject matter more important, not less, but courts need new tools to enforce patent law efficiently for the latest technological advances.
Keywords: Patents Patentable Patentability Subject Matter Doctrine Physically Change Modify Lab. Corp. Metabolite business methods software biotechnology
Suggested Citation: Suggested Citation
Kuhn, Jeffrey M., Patentable Subject Matter Matters: New Uses for an Old Doctrine (June, 30 2008). Berkley Technology Law Journal, Vol. 22, No. 89, 2007. Available at SSRN: https://ssrn.com/abstract=1153716